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A Face, a Butt and Jay-Z

Back in 2004 someone calling himself Danger Mouse made an unauthorized mash-up album, combining lyrics and beats from Jay-Z’s The Black Album with background samples from The Beatles’ White Album. Recording industry giant EMI, who controls The Beatles’ work, flipped. I remember an interview with some corporate lawyer guy blathering about abominations, wanton disregard, the fullest extent of the law and capricious blahblah freakin’ blah. Then they interviewed Jay-Z, who – well, I’ll get to his reaction.

Anyway, a St. Louis teenager, Jimmy Winkelmann, recently started a small clothing company as a joke. He called it The South Butt, with the tagline, “Never Stop Relaxing” – playing off The North Face and their tagline, “Never Stop Exploring.” He’s got a funny little disclaimer on his website, ending with “If you are unable to discern the difference between a face and a butt, we encourage you to buy North Face products.”

Cute, worth at least a chuckle, harmless. The kid hasn’t done any damage, hurt our collective resources, endangered others, etc. But has he, somehow, damaged TNF’s image? I doubt it. TNF seems to be doing a fine job of that on their own.

The seven billion dollar company, owned by the mega VF Corporation, is suing the kid in court. C’mon, guys. Seriously?

Unlike the music example above, it’s not even clear that young “ignorance of the law is no excuse” Jimmy infringed on TNF’s rights – he has an original name, and a different, albeit somewhat similar (as if no such similarities exist elsewhere in the business world), logo. Besides, satire and parody are protected forms of free speech.

Not surprisingly, the tiny South Butt’s business has exploded since TNF unleashed the dogs.

“It’s pretty much just amazing, but it’s all thanks to The North Face, I mean, them suing me – well, first threatening me was, like, a huge gift, and then when they actually tried to take me to court it was, like, the best Christmas present ever, huhuh,” that dastardly Winkelmann kid said in a classic TV interview – check it out.

Even if TNF/VF’s high-powered law team succeeds, or they bury the kid in legal fees, why? Why turn a moderately challenging situation into a PR nightmare? The longer this continues, the more they make themselves look greedy, humorless, and out-of-touch, even bully-like. For a company with a great athlete team, a great history, and who donates to many good causes, I think they’re screwing-up on this one.

Surely they’ve got sharper minds on board than this, no? Maybe they could adopt a sense of humor and figure out a way to have some fun with it. Who knows, maybe some overzealous exec who’s never gotten off his, ahem, South Butt, is getting chewed-out right now for being too uptight and they’ll change course tomorrow and drop the case.

The kid in TNF's crosshairs.

Better yet, they could turn it into something positive. Come out with a statement that sounds like a real person (don’t let anyone who wears a suit and tie write it) who’s coming to the realization that they’ve gotten a little off track and overreacted – we’ve all been there – and make amends, call off the Hounds of Hell, and donate what you’d spend in legal fees to some great cause. Heck, do it with the kid on-camera in a loving embrace with his parents (“Oh thank you, thank you, for not taking my parents’ home away from us!”), maybe some pretty flowers and some puppy dogs frolicking (just don’t mix-up the cages and accidentally unleash the Hounds).

Or simply be cool about it. Take a hint from Jay-Z, who appears to be wearing a TNF Snorkel Jacket in some of his older videos. When asked what he thought about Danger Mouse’s mash-ups of his raps with songs from the Beatles, his response was very un-EMI, un-TNF like. He replied, “I think it’s fly.”

This is incorrect. This is a commercial site (presumably Winkelmann is not attempting to provide “satire” or “parody”; his site is the mouthpiece of his company), so any speech he does make is commercial speech, which is a less protected form of speech than, say, political speech or opin-ed in a newspaper. This is (IMO) good, because most people wouldn’t like the idea of Montsanto or Phillip Morris “satire” being afforded the same sort of legal protection as The Daily Show “satire.” The source you linked to makes this exact distinction as well.

And I’d say the logo is a lot more than “somewhat similar”–it is too similar, and could easily be mistaken for TNF logo at a distance. The layout is the same, the font is the same, the proportions of the company name is the same (“The North Face” aligns perfectly with “The South Butt” when using a fixed-width font)…it’s disturbingly similar, to the point where someone can easily make the argument that his logo could cause confusion.

Still, agree with your overall post–TNF would have played this hand better had they just let sleeping dogs lie.

I’d just like to thank Jeremy for being the seemingly only person in a vast majority who uses their head.
How is it that this kid claims this company as a parody, and his cover story is that he’s trying to make money to get through college….? Seriously? That’s supposed to pull the wool over my eyes? There is no way that the contract you have with UPS for shipping, and your ability to product products for national purchase isn’t handily enough to get you through college. Not to mention designing and upkeeping an e-commerce website. He is obviously making money off of this situation, and it is clearly fraudulent. One of his Jackets looks almost EXACTLY like The North Face’s Denali Jacket. Take a peek a little further than what the media spews forth, and you’ll realize that this situation has much more than meets your eyes. Also you’ll want to do some research on his parents, as his father’s history is just as shady as Kid Winkelman’s cover story is. I hope Jimmy, and all who are involved with this ridiculous waste of time, and poor excuse for copyright infringement get sued back into diapers.

Good points. Not to be a Patagoniac, but I’m not really a TNF fan, and this bit of soulless idiocy is that much worse. Their gear these days doesn’t perform and wears out quickly, and I think they’re gotten completely out of touch with their partner base – something that Patagonia does much better. I think what makes the difference is the autocracy of the large corporation that owns TNF versus the democracy of the Cleanest Line blog or the fact that Chouinard still owns the company.

such a good point, scott, about the autocracy thing. it’s a bummer, really. and it doesn’t have to be like that. we have examples of good “big” corps, but indeed it seems far easier to drift when things get so big, and then shareholder profits and all that replace any connection with roots.

I think Kelly’s assessment is spot-on. Just because TSB is a commercial endeavor doesn’t preclude it from being a parody for the purposes of determining trademark infringement. It does weigh in favor of finding infringement, but the reason that parodies are given broader leeway is out of a concern for free expression. For a trademark infringement claim, the touchstone is likelihood of confusion. I haven’t come across it specifically, but I’d bet that that’s at the point of purchase. If you’re at the cash register buying a TSB shirt when you think you’re buying a TNF shirt, you are a bit of an arse.

As far as a dilution claim goes, likelihood of confusion isn’t what’s critical and parody doesn’t come into play. What does matter is whether TSB weakens, or dilutes, the ability of TNF to sell things based on the strength of its brand. I share Kelly’s skepticism on this point. Maybe the TNF brand has been tarnished by being compared to a butt. Vicious.

Anyway, I think TSB is funny, and Jay-Z is right, The Gray Album is fly. If you really want a radical take on IP, check out Remix by Larry Lessig.

Wow, I love that Esq. Cordes has some sense to clarify this murky issue. Nina Totenberg, NPR’s legal affairs corespondent, could take some lessons from Kelly’s keen articulation of legal precedent. To go out on a limb Jeremy, can you really “In general” agree with Kelly and then proceed to “In general” attempt to refute his Lincolnesque assertions? Just go for it Jeremy, disagree with Kelly “In general” and in principle. Kelly has thick skin and the bloke who started this company has a thick wallet: good on him.

Lets get one thing straight, a holding company with the word “Vanity” as its namesake is true to its core by suing this funny, shrewd kid.

great comments, thanks, all. indeed it seems to me that TNF’s handling of this is a case study of inviting bad PR.

the legal case seems far from clear. were it clear-cut, they wouldn’t be going to court, right? one side would certainly concede — unless, of course, the deeper pocketed side is just trying to bleed dry the smaller pockets of the smaller side, in which case there would be no two ways about it: bullying. but given how repulsive that would be, i’d like to assume that’s not the case.

still, in reading the law.com article i linked to above, and in listening to NPR’s “Marketplace” segment on it on Fri night ( http://marketplace.publicradio.org/display/web/2010/01/15/pm-south-butt/ ), if anything it sounds like TNF might be facing uphill odds. the NPR program cited a case in which a parody brand called Lardashe got sued by Jordache jeans — Jordache lost. granted, that’s just one example. while Jeremy makes a good point that TSB’s satire/parody is less protected than non-profit satire/parody speech, Trent, you have a helluva strong opinion ya spouted there without much backing (“clearly fraudulent” and “copyright infringement” — it’s trademark infringement if anything, chief, even i know that) — at least if the law.com article and the cases cited by NPR are any indication. not that i know what i’m talking about either from a legal viewpoint, but at least i can read :).

i’m no lawyer, and i don’t know if any of the above posters are, either. hell, i live in a cabin up in the hills, what do i know — well, i do know that in TNF’s handling of this they aren’t looking like a cool outdoor-values-oriented company, but rather looking like a mega-corporation that’s perhaps drifted a, ahem, a teensy bit off-course. of course they have to protect their brand, but news flash to TNF: there are other ways of handling things beyond sending Cujo after the kid. i think they’re acting, to quote the great Walter Sobchak, “verrrry un-dude.”